While generally in favor of first inventor to file, the change poses a challenge to many future applications, Thomas T. Moga, co-chair of the Life Sciences and Biotechnology Practice at the law firm Shook, Hardy & Bacon, told GEN.
“We’ve had time to work with the inventors, go back and forth, get a very nice application, get nice, correctly done figures—something that is highly presentable, well written, properly researched, and fully reviewed by the inventor. I understand the benefits of first-to-file, but I’m very concerned that now that it’s a race to the patent office, the quality of our patent applications will suffer,” Moga said.
“It’s easy to say, ‘We’ll spend more time with the inventor. We’ll make the inventor more responsive,’ Moga said. “But when you’re dealing with corporations that have already been cut back when it comes to personnel, now you say, ‘by the way, can you look at this patent application because we’ve got to get this thing filed fast?’”
As argued in this space when the Senate bill passed, first-to-file hurts smaller inventors since they often lack the experienced patent lawyers and other consultants or staffers that a corporate giant can muster to make sure patent paperwork is squared away quickly.
Reps. John Conyers (D-MI) and Dana Rohrabacher (R-CA) sought an amendment to delay first-to-invent unless a presidential finding held that the rest of the world had adopted grace periods to protect intellectual property between the time inventions occur and patents are filed. The amendment was among 15 debated by the House, most of which failed.
Conyers prevailed, however, on another amendment setting a 60-business-day grace period for inventors to file drug patents after FDA approval.
Opponents have also raised a Constitutional issue—no small argument in the House, where control flipped from Democrats to Republicans last year in large part on their promise to align laws and policies with the document that established the federal government. Article I, Section 8 of the U.S. Constitution states as among the powers of Congress: “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”